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Filed on behalf of: VirnetX Inc.
`By:
`
`Joseph E. Palys
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1996
`Facsimile: (202) 551-0496
`E-mail: josephpalys@paulhastings.com
`
`
`
`Paper No. ___
`Filed: May 23, 2016
`
`Naveen Modi
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1990
`Facsimile: (202) 551-0490
`E-mail: naveenmodi@paulhastings.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`VIRNETX INC.
`Patent Owner
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`
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`
`
`Case IPR2015-00812
`Patent No. 8,850,009
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`
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`PATENT OWNER’S REPLY IN SUPPORT OF MOTION TO EXCLUDE
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`

`
`Case No. IPR2015-00812
`Patent No. 8,850,009
`
`Table of Contents
`
`Exhibits 1060 and 1063-1065 .......................................................................... 1
`
`Exhibits 1001, 1002, 1009-1035, 1037-1041, 1043-1048, 1068, and
`1069 Should Be Excluded Along With Portions of Exhibit 1005 ................... 4
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`
`
`
`
`I.
`
`II.
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`
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`
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`

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`
`
`Case No. IPR2015-00812
`Patent No. 8,850,009
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Pozen Inc. v. Par Pharm., Inc.,
`
`696 F.3d 1511 (Fed. Cir. 2012) ............................................................................ 2
`
`Conoco Inc. v. DOE,
`
`99 F.3d 387 (Fed. Cir. 1996) ................................................................................ 4
`
`Doe v. United States,
`
`976 F. 2d 1071 (7th Cir. 1992) ........................................................................ 1, 2
`
`Actifio, Inc., v. Delphix Corp.,
`
`
`
`IPR2015-00108, Paper No. 56 (Apr. 29, 2016) .................................................... 4
`
`Statutes
`
`37 C.F.R. § 42.22(a)(2) ............................................................................................. 1
`
`Rules
`
`Federal Rule of Evidence 807 ............................................................................... 1-4
`
`
`
`
`
`
`
`
`
`

`
`On May 16, 2016, Petitioner Apple Inc. (“Apple”) filed an Opposition
`
`Case IPR2015-00812
`Patent No. 8,850,009
`
`
`(Paper No. 37) to Patent Owner’s Motion to Exclude (Paper No. 35). Apple,
`
`however, provides insufficient reasons for admitting the exhibits at issue, i.e.,
`
`Exhibits 1001, 1002, 1009-1035, 1037-1041, 1043-1048, 1060, 1063-1065, 1068,
`
`and 1069, and portions of Exhibit 1005. As such, Patent Owner’s Motion to
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`Exclude should be granted.
`
`I.
`
`Exhibits 1060 and 1063-1065 Should Be Excluded
`
`Apple asserts that VirnetX should have identified “specific statements in
`
`[these] exhibits alleged to be hearsay.” Paper No. 37 at 1. Apple misses that
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`VirnetX asserted these exhibits were hearsay in their entirety. Paper 35 at 2-3,
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`Paper 18 at 1. Moreover, there is no requirement to identify “specific statements,”
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`see 37 C.F.R. 42.22, and Apple does not deny that Exhibits 1060, and 1063-1065
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`constitute hearsay.
`
`Apple further argues that these exhibits should be admitted under the
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`residual exception of Fed. R. Evid 807. Apple states that courts have “wide
`
`discretion” in applying the residual exception to the hearsay rule. See Paper 38 at
`
`2 (citing Doe v. United States, 976 F.2d 1071, 1076-77 (7th Cir. 1992)). This is
`
`wrong. Apple’s reliance on Doe, which involves out of court statements made by a
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`child abuse victim against his abuser, is misplaced. As provided by Doe:
`
`1
`
`

`
`Case IPR2015-00812
`Patent No. 8,850,009
`
`
`Congress intended that the residual exceptions be used
`sparingly; although trial judges are given considerable
`discretion in evaluating hearsay offered thereunder, that
`discretion is “tempered by the requirement that the
`exception be reserved for exceptional cases.”
`
`Id. at 1074 (emphasis added). Indeed, the Federal Circuit recently excluded a
`
`sworn declaration assumed to be trustworthy. Pozen Inc. v. Par Pharm., Inc., 696
`
`F.3d 1151, 1161 n.6 (Fed. Cir. 2012) (even if the declaration at issue was
`
`trustworthy, “this is not an exceptional case and thus does not warrant the residual
`
`hearsay exception”).
`
`Ignoring the mandate that the residual hearsay exception is to be “used
`
`sparingly” for truly “exceptional cases,” Apple attempts to establish that the
`
`statements in these exhibits meet the five requirements of Rule 807. But they do
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`not meet all of those requirements. Apple first argues that Ms. Ginoza’s statements
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`in Exhibits 1060 and 1063 is corroborated by and corroborates Exhibits 1064 and
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`1065. See Paper 38 at 3, 4. That is incorrect. Ms. Ginoza’s statements and the
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`statements in Exhibits 1064 and 1065 have no circumstantial guarantees of
`
`trustworthiness. There is no evidence corroborating Ms. Ginoza’s statements. She
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`has no personal knowledge to support the assertions that RFC 2401 became
`
`publicly available in November 1998 and RFC 2543 became publicly available in
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`March 1999. She was not involved with the RFC editor’s publication process until
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`2
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`

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`June of 1999. (Ex. 1063 at 14 (page 50, lines 17-25).) She not only failed to
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`Case IPR2015-00812
`Patent No. 8,850,009
`
`
`produce the RFC Editor records that formed the basis of her statements, but she
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`also could not even explain what existed in those records that were the basis of her
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`statements with respect to RFC 2401. See Ex. 1060 at ¶ 107; Ex. 1063 at 11 (p. 40,
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`ll. 2-5). Therefore, her blanket assertion that “RFC 2401 has been publicly
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`available through the RFC editor’s web site or through other means since its
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`publication in November 1998” (Ex. 1060 at ¶ 107) has no “circumstantial
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`guarantee[] of trustworthiness.” Further, there is no evidence having
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`“circumstantial guarantees of trustworthiness” for the statements in Exhibits 1064
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`and 1065 (Ex. 1064 at 9; Ex. 1065 at 3) relating to the availability of RFCs from
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`the IETF website that Apple relies on for their truth. 1 Reply, Paper No. 29 at 19-
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`21.
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`In addition to lacking indicia of trustworthiness required by Rule 807, Ms.
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`Ginoza’s statements and Exhibits 1064 and 1065 are not more probative than other
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`evidence reasonably available to Petitioner, as required by FRE 807. As just one
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`1 Apple asserts that Exhibits 1064 and 1065 are being submitted for another
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`purpose as well and should be admitted. See Paper No. 38 at 3 n.1. Patent Owner
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`disagrees as these exhibits are being submitted for their truth. See Reply, Paper
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`No. 29 at 19-21.
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`3
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`

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`Case IPR2015-00812
`Patent No. 8,850,009
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`example, Petitioner could have contacted the authors of RFCs 2401 and 2543 to
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`obtain declarations regarding their personal knowledge of the publication of RFCs
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`2401 and 2453. Petitioner’s failure to submit such in court testimony not only
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`shows that the evidence currently of record is not “more probative on the point for
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`which it is offered than any other evidence that the proponent can obtain through
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`reasonable efforts” but also shows that admitting this evidence is not “in the
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`interests of justice,” as required by FRE 807. Indeed, this is simply not one of
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`those “exceptional” cases where admitting hearsay evidence under the residual
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`exception is warranted. Conoco Inc. v. DOE, 99 F.3d 387, 392 (Fed. Cir. 1996).
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`For at least the above reasons, the Board should exclude Exhibits 1060 and
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`1063-1065 because they constitute inadmissible hearsay and no exception applies.
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`II. Exhibits 1001, 1002, 1009-1035, 1037-1041, 1043-1048, 1068, and 1069
`and Portions of Exhibit 1005 Should Be Excluded
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`Apple asserts that Dr. Tamassia considered Exhibits 1001, 1002, 1009-1035,
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`1037-1041, and 1043-1048, and therefore, they are admissible. See Paper 37 at 7.
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`However, these exhibits were not cited by Dr. Tamassia (in Ex. 1005) as forming
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`the basis for his positions that are relevant to this proceeding. See Actifio, Inc., v.
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`Delphix Corp., IPR2015-00108, Paper No. 56 at 57 (Apr. 29, 2016) (excluding
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`exhibits that were not relied upon). Thus, these exhibits should be excluded and
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`4
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`

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`the unrelated portions of Dr. Tamassia’s declaration to this proceeding should
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`Case IPR2015-00812
`Patent No. 8,850,009
`
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`likewise be excluded.
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`As for Exhibit 1068 and 1069, Apple does not deny that it does not rely on
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`them in any of its papers. They should, therefore, be excluded as irrelevant.
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`Dated: May 23, 2016
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`Respectfully submitted,
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`By:/Joseph E. Palys/
`Joseph E. Palys
`Reg. No. 46,508
`
`Counsel for VirnetX Inc.
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`
`
`5
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`

`
`
`
`Case No. IPR2015-00812
`Patent No. 8,850,009
`
`CERTIFICATE OF SERVICE
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`I hereby certify that on this 23rd day of May 2016, a copy of the foregoing
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`Patent Owner’s Reply in Support of Motion to Exclude was served electronically,
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`pursuant to agreement, upon the following:
`
`Counsel for Apple Inc.:
`
`
`
`iprnotices@sidley.com
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By:/Joseph E. Palys/
`Joseph E. Palys
`Reg. No. 46,508
`Counsel for VirnetX Inc.
`
`Dated: May 23, 2016

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